MPEP 705

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705 Patentability Reports[edit | edit source]

Where an application, properly assigned to one Technology Center (TC), is found to contain one or more claims, per se, classifiable in one or more other TCs, which claims are not divisible inter se or from the claims which govern classification of the application in the first TC, the application may be referred to the other TC(s) concerned for a report as to the patentability of certain designated claims. This report is known as a Patentability Report (P.R.) and is signed by the primary examiner in the reporting TC.

Note that the Patentability Report practice is only to be used in extraordinary circumstances. See MPEP § 705.01(e).

705.01(a) Nature of P.R., Its Use and Disposal[edit | edit source]

The Patentability Report is in memorandum form and includes the citation of all pertinent references and a complete action on all claims involved.

I. DISAGREEMENT AS TO CLASSIFICATION[edit | edit source]

Conflict of opinion as to classification may be referred to a classification dispute TC representative panel for decision.

705.01(b) Sequence of Examination[edit | edit source]

In the event that the supervisory patent examiners concerned in a P.R. case cannot agree as to the order of examination by their Technology Centers (TCs), the supervisory patent examiner having jurisdiction of the application will direct that a complete search be made of the art relevant to his or her claims prior to referring the application to another TC for report. The TC to which the application is referred will be advised of the results of this search.

If the supervisory patent examiners are of the opinion that a different sequence of search is expedient, the order of search should be correspondingly modified.

705.01(c) Counting and Recording P.R.s[edit | edit source]

The forwarding of the application for a Patentability Report is not to be treated as a transfer by the forwarding Technology Center (TC). When the P.R. is completed and the application is ready for return to the forwarding TC, it is not counted either as a receipt or action by transfer. Credit, however, is given for the time spent.

The date status of the application in the reporting TC will be determined on the basis of the dates in the TC of original jurisdiction. To ensure orderly progress in the reported dates, a timely reminder should be furnished to the TC making the P.R.

705.01(d) Duplicate Prints of Drawings[edit | edit source]

In Patentability Report applications having drawings, the examiner to whom the case is assigned will furnish to the Technology Center (TC) to which the application is referred, prints of such sheets of the drawings as are applicable, for interference search purposes. For Image File Wrapper (IFW) processing, see IFW Manual section 3.1. That this has been done may be indicated by a pencil notation on the file wrapper. For Image File Wrapper (IFW) processing, see IFW Manual.

When an application that has had Patentability Report prosecution is passed for issue or becomes abandoned, NOTIFICATION of this fact will AT ONCE be given by the TC having jurisdiction of the application to each TC that submitted a Patentability Report. The examiner of each such reporting TC will note the date of allowance or abandonment on the duplicate set of prints. At such time as these prints become of no value to the reporting TC, they may be destroyed.

705.01(e) Limitation as to Use[edit | edit source]

Patentability Report practice is based on the proposition that when plural, indivisible inventions are claimed, in some instances either less time is required for examination, or the results are of better quality, when specialists on each character of the claimed invention treat the claims directed to their specialty. However, in many instances a single examiner can give a complete examination of as good quality on all claims, and in less total examiner time than would be consumed by the use of the Patentability Report practice.

Where claims are directed to the same character of invention but differ in scope only, prosecution by Patentability Report is never proper.

Exemplary situation where Patentability Reports are ordinarily not proper are as follows:

(A) Where the claims are related as a manufacturing process and a product defined by the process of manufacture. The examiner having jurisdiction of the process can usually give a complete, adequate examination in less total examiner time than would be consumed by the use of a Patentability Report.

(B) Where the claims are related as product and a process which involves merely the fact that a product having certain characteristics is made. The examiner having jurisdiction of the product can usually make a complete and adequate examination.

(C) Where the claims are related as a combination distinguished solely by the characteristics of a subcombination and such subcombination, per se. The examiner having jurisdiction of the subcombination can usually make a complete and adequate examination.